Decision Date: April 2, 2014 -

Court: U.S. Court of Appeals for the Federal Circuit -

Patents: D634,488 and D634,487 -

Holding: N.D. of Ohio’s Grant of Summary Judgment of Invalidity AFFIRMED -

Opinion: Plaintiff MRC Innovations, Inc. is the owner of two design patents claiming ornamental designs for football and baseball jerseys for dogs. MRC previously supplied dog jerseys to Defendant Hunter MFG., LLP. After business relations between MRC and Hunter soured, Hunter turned to another supplier, Defendant CDI International, Inc., for dog jerseys. MRC brought suit against Hunter and CDI alleging infringement of patents D634,488 (football jersey) and D634,487 (baseball jersey). Hunter moved for summary judgment on the grounds that the patents were obvious under 35 U.S.C. § 103(a). The district court granted summary judgment to Hunter, holding both patents invalid.

Obviousness determinations are reviewed de novo. Underlying factual questions are reviewed for clear error. A court performing an obviousness analysis considers (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) objective evidence of non obviousness. The ultimate inquiry in a design patent obviousness determination is “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” Answering this inquiry is a two-step process. First, a primary reference must be identified in the prior art. The primary reference must have design characteristics which are “basically the same” as the claimed design. Second, at least one secondary reference must be found. The secondary reference must be sufficiently related to the first reference such that the appearance of an ornamental feature in one reference would suggest the application of that feature to another reference...